Patent rights have always played a vital role in encouraging innovations across the globe. To keep pace with the standard time globally for granting a patent, the Patent Rules were amended in 2016 to introduce the provision of expedited examination for an applicant who has indicated India as a competent ISA or IPEA or the applicant is a Startup. The Draft Amendment rules published on December 04, 2018, have further expanded the category of applicants who may request for expedited examination. Let's first understand what expedited examination is under the Indian Patent Law.
A request for expedited examination is an application filed by an applicant requesting the Indian Patent Office to accelerate the examination of the patent application under rule 24C of the Patent Rules, 2003. The request for expedited examination is different from the express request for examination filed for the PCT National Phase application at any time before thirty-one months under rule 20(4)(ii) of the Patent Rules, 2003. The applications for expedited examination will be allotted to a queue, which is different from the ordinary examination queue, and already has thousands of applications awaiting examination. Hence, the applications for which expedited examination is requested will be allotted to an examiner for examination substantially sooner than the applications that have been queued for normal examination.
Who qualify for Expedited Examination?
According to draft rules, an applicant who fulfills any of the following criteria can apply for expedited examination:
- The applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.
- The applicant is a Start-up as defined in rule 2(fb) of the Patent Rules, 2003; or
- The applicant is a small entity as defined in rule 2(fa) of the Patent Rules, 2003; or
- The applicant is a female natural person; or
- The applicant is a government undertaking in accordance with section 2(1) (h) of the Patent Act, 1970 in case of an Indian applicant, or is a similar entity in case of a foreign applicant; or
- The applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian patent office with another participating patent office.
Expedited Examination Procedure
According to rule 24C of the Patent Rules, 2003, an applicant can file a request for expedited examination by filing Form 18A as specified in the second schedule of Patent Rules, 2003, along with the fee as mentioned in the first schedule only by electronic transmission duly authenticated with 48 months from the date of priority or date of filing of application whichever is earlier.
In addition to the above, a request for expedited examination shall be accompanied by a request for early publication under rule 24A of the Patent Rules, 2003, except where an application has been published or a request for publication has already been filed. Further, a request for normal examination can be converted into a request for expedited examination by paying the relevant fee and submitting the requisite document.
Once the request for examination has been filed and the application has been published, the Controller shall refer the request for expedited examination along with the application to the examiner in the order of filing of such requests. Then the examiner is required to examine the patent application and make his report within one month but not exceeding two months from the date of reference of the application to him. The Controller, then, is required to dispose offsuch report of the examiner within one month of receipt of report and the first statement of objections, if required, are to be issued within fifteen days from the date of disposal of the report by the Controller.
A reply to the first statement of objection is to be filed within 6 months from the date of the examination report or within an extended period of 3 months. However, it is advised to file the response at the earliest as it would be examined in the order in which it is received by the patent office.
Further, the Controller is required to dispose-off the application of expedited examination within a period of three months from the date of receipt of the last response to the first examination report or within three months from the last date to put the application in order for grant. However, this time limit shall not be applicable in case where pre-grant opposition is filed.
Conclusion The step to broaden the category of applicants who can apply for expedited examination is an encouraging step for inventors to get their invention patented expeditiously.
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